TIVO vs E*

[jacmyoung]

For some reason I had the luck discovering a most recent DE court decision to deny a motion for case transfer, this decision is so new E* did not even have the chance to cite it in its 4/13/09 filing in the DE court:

http://depatentlaw.morrisjames.com/uploads/file/09%20022%20311.pdf

Notice this is a ruling that just came out of the same DE court, though by a different judge.

The most compelling part of the ruling is the judge’s own rules regarding a decision granting a transfer:

1) There is no bona fide relationship between Delaware and the defendant [in our case TiVo is a Delaware company];
2) There is a related first-filed case in another district [in our case as E* indicated there is none, TiVo never filed one in the TX court];
3) The defendant [again in our case TiVo] is truly a regional enterprise [as an example if TiVo were a TX-only business, which is not the case].

Using the judge’s own words: “None of these circumstances is present at bar.”

 

[jacmyoung]

Well today is the last day for TiVo to file a response in the DE court regarding the case transfer, if we see one soon, my guess is TiVo will argue the current litigation in the TX court is the first-to-file and also the related litigation.

I first speculated the DE judge should shelve this transfer decision until Judge Folsom ruled on the contempt issue, and E*’s filing supported my speculation. Let’s see what TiVo will say, or will not say, or if TiVo actually misses today’s deadline, what could be the reason or implication.

 

[jacmyoung]

Now that TiVo’s response is available, a few observations:

First, as I said TiVo’s most effort would be to argue that a related litigation is currently on-going at the TX court, and of course Judge Folsom has the most experience in this litigation, no question about that.

But TiVo’s argument that even if Judge Folsom finds more than colorable difference, he should still have jurisdiction over the continuing litigation, which is not true.

If Judge Folsom finds more than colorable difference, he must end the contempt proceeding, according to the Federal Circuit Guidelines. Meaning this current litigation in the TX court must end. Judge Folsom simply may not even conduct his analysis on the new design infringement issue, because the contempt proceeding will be inappropriate for such infringement analysis if the difference is more than colorable, this much the DE judge himself had made it abundantly clear. TiVo simply ignores that, insisting that there is still a supplemental damage motion pending, or the permanent injunction still in force. But neither of these two issues has any bearing on this new action, which is whether the new design is an infringement. This new action has nothing to do with the additional damages nor the injunction, it is a declaratory judgment action. The purpose of a declaratory judgment action is to remove the cloud over the plaintiff in an expeditious way, not to touch on any damages, nor the effect of the injunction.

TiVo of course can file a new action before Judge Folsom to continue to pursue the new design infringement issue, but then since E* is the “first-to-file” with regard to the new action, TiVo’s new action, should TiVo files it, should be transferred to the DE court.

TiVo does make a good effort of using statistical analysis refuting E*’s assertion that the TX court would be too slow to move the new action to an expeditious conclusion.

Once a related litigation is over, the judge’s experience in such matters is no longer an issue, rather that the “first-to-file” forum becomes the “paramount” consideration, all things been equal or even somewhat in favor of a transfer. TiVo cited the word “paramount” yet totally ignored it, as if the word “paramount” meant nothing. If so the other DE judge would not have used that word when he denied a transfer request (see my previous link).

Another problem is TiVo continues to spent a lot of time arguing that E* was “forum shopping,” when the DE judge had already dismissed TiVo’s such argument. This is the same pattern TiVo had exhibited in the TX court, when it became clear Judge Folsom had refused to find contempt “on the face,” TiVo continued to insist E* should be find in contempt, regardless of the modifications, because “on the face violation” is enough, or the changes are “irrelevant.”

The same kind of mentality never seems to go away.

 

[jacmyoung]

I just got a friendly note that those TiVo investors had been patting themselves on the backs that they had succeeded in shutting me up at the other site, but then they seem fully aware that I continue to post here.

I have not visited the other site's discussion for reasons Scott had alluded to earlier. Just wonder why those "investors", while fully aware of the on-going thread here, had no spine to come here for a debate?

I know why, their strategy worked well over there because all they had to do was to complain to the mods, here the mods give reasonable opportunities before intervening and are not afraid of controversies.

In any event, one thing to keep in mind, the patent law encourages design-around, as a way to encourage innovation. The whole reason we had this patent system in the first place was so that the inventors are encouraged to fully disclose their inventions, rather to keep the inventions trade secret. The disclosure must be so detailed that a person of ordinary skill in the field of the invention must be able to read the patent and duplicate the invention without undue experimentation.

Why? So that others can imitate and design around, as long as they do not infringe. Otherwise there should be no reason to have a patent system in the first place. This is a very important point to understand.

 

[vampz26]

Wow...conspiracy theory...lets just sit back and enjoy the one man show...

So, tell us all...what makes you the bringer of light to this dark abyss of the Tivo trial?

 

[jacmyoung]

Wow...conspiracy theory...lets just sit back and enjoy the one man show...

So, tell us all...what makes you the bringer of light to this dark abyss of the Tivo trial?

Unfortunately you have never reached the caliber of some of the smart TiVo supporters over there. They knew how to force the mods there to move the discussion to some hidden area, just ask Scott. You on the other hand has yet succeeded in proving your point that Judge Folsom is trying to lead the way for a "new world order"

As far as being a dark abyss of this trial, I asked you a simple question, how much longer did you think this trial would go on, as bright as you were for your "prediction" from years ago, you said this time: "I don't know." Do you know or do you not know whether this will be a dark abyss?

 

[Curtis0620]

It's in the Legislative forum.

 

[jacmyoung]

It's in the Legislative forum.

As if this case has anything to do with any pending legislations

The patent law is as old as it can get, while some reform efforts were made in the past by the Congress to meet the changing world of today's fast paced development, this discussion never had much to do with such reform efforts.

But if any of the reform efforts can even be considered, the general trend is to promote design around, and limit the ability of "patent trolls" from intimidating competitors' into licensing.

In fact this declaratory judgment case is a perfect example of such trend. Those who are under the threat of infringement lawsuits by the patent owners no longer had to wait and let the patent owners dictate the process.

 

[vampz26]

Unfortunately you have never reached the caliber of some of the smart TiVo supporters over there. They knew how to force the mods there to move the discussion to some hidden area, just ask Scott. You on the other hand has yet succeeded in proving your point that Judge Folsom is trying to lead the way for a "new world order"

As far as being a dark abyss of this trial, I asked you a simple question, how much longer did you think this trial would go on, as bright as you were for your "prediction" from years ago, you said this time: "I don't know." Do you know or do you not know whether this will be a dark abyss?

You bring up bits and pieces of old conversations, and attempt to sound smarter than you really are by taking them out of context. Yet the one major point I've made recently you ignore completely.

Figures...

 

[TheKrell]

Unfortunately you have never reached the caliber of some of the smart TiVo supporters over there.

I wanted to PM you about something or someone, but your inbox is full.

 

[jacmyoung]

I wanted to PM you about something or someone, but your inbox is full.

Done.

 

[vampz26]

I wanted to PM you about something or someone, but your inbox is full.

Believe me, more than that inbox is full...

 

[jacmyoung]

I wanted to PM you about something or someone, but your inbox is full.

Thanks for the PM.

 

[Rey]

Thanks for the PM.

sent you a PM

 

[ts7]

Personally I enjoy the commentary provided by jacmyoung. I don't know what his expertise is, but he makes many good, reasonable points.

He is at least as accurate as most of the mainstream media!

 

[vampz26]

Personally I enjoy the commentary provided by jacmyoung. I don't know what his expertise is, but he makes many good, reasonable points.

He is at least as accurate as most of the mainstream media!

It was interesting the first time he posted it...after a while its monotonous...

 

[jacmyoung]

sent you a PM

Thanks!

 

[jacmyoung]

Personally I enjoy the commentary provided by jacmyoung. I don't know what his expertise is, but he makes many good, reasonable points.

Thanks!

He is at least as accurate as most of the mainstream media!

Now it depends. There are some that believe the mainstream media are full of it and it can be true

The question is, what are not the mainstream media, and the better question may be, for those that are not mainstream media, are they full of it themselves or not?

The above questions may appear off the topic, but they are not. In this TiVo v. E* debate, there are those who think TiVo is full of it based on what E* has been saying, and those who think E* is full of it based on what TiVo has been saying.

The good thing is, unlike in the case of the media debate, here we actually have the Court to decide for us who is full of it, or who is less full of it And the even more interesting thing is, before the Court even makes such decision, there are many similar decisions made by the Court before one can read and make some speculations.

 

[jacmyoung]

Now back to discuss a bit more of one of the strongest TiVo's point in this latest DE filing.

As I said earlier, TiVo's strongest argument was that the statistics did not agree with E* that DE court will be able to provide a speedy trial compared to the TX court.

TiVo cited the federal stats that the median to-trial time for all civil cases in the TX court in 2008 was 18.5 months, and the same stats for the DE court was 25 months.

However E* was referring to "patent cases" in the TX court been so backed up that E*'s estimate was 36 months to-trial time for a patent case in the TX court.

Another point TiVo made was E* themselves in the past filed an infringement suit against TiVo in the TX court, not in the DE court. That case was filed in 2004 I believe, back when the TX court was the only court in the nation that had a streamlined fast-paced record of handling patent cases.

Of course this second TiVo's point is irrelevant, just because E* filed an infringement suit against TiVo in the TX court before, does not mean E* must continue to file in the TX court.

While it is true E* has an uphill battle on the transfer issue, I think E* did the best it could by asking for a delay of the decision. I said before E* made its filing, the DE judge should delay his transfer decision until after Judge Folsom makes his ruling, let's wait and see.

One thing I want to point out is, TiVo did not even respond to E*'s request that the DE judge delays his decision on the transfer, I thought it was odd. Without a response by TiVo, even if the DE judge wants to transfer the case, it is reasonable to say the DE judge should consider E*'s suggestion to delay his decision, because TiVo did not object to E*'s such request to delay.

 

[DodgerKing]

I wanted to PM you about something or someone, but your inbox is full.

I wonder who that could be?